DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
Applicant's election with traverse of claims 1-5 in the reply filed on 04/29/2026 is acknowledged. The traversal is on the ground(s) that (1) there are overlapping or related technical features between the four groups of claims and (2) there would be no undue burden on the Examiner to examine all the groups of claims. Reference is made to the International Search Report and the Written Opinion in PCT/JP2022/015343 (of which the present application is the U.S. National Phase entry) dated June 21, 2022, where the Examiner considered all claims. This is not found persuasive because the claims do not make a contribution over the cited prior art Schneider et al. (U.S. Pub. 2008/0064806) and therefore lack unity of invention
The requirement is still deemed proper and is therefore made FINAL.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Schneider et al. (U.S. Pub. 2008/0064806).
Regarding claim 1, Schneider et al. teaches a method for the production of defoamer formulations prepared by mixing at least an organopolysiloxane having a defined but limited fraction of silicon-bonded hydroxyl and/or alkoxy groups and hydrophilic silica which meets the limitation of silicone oil compound (A) for a defoaming agent (abstract). Schneider et al. teaches polydiorganosiloxanes having a viscosity of preferably 100 to 1 000 000 mPas at 25 ˚C wherein these branched or part-crosslinked siloxanes then have viscoelastic properties which meets the limitation of a hydrophobic crosslink- treated product organopolysiloxane having a viscosity of 10 to 100,000 mm2/s at 25°C (paragraph 54). Schneider et al. teaches 100 parts of at least one polyorganosiloxane which meets the limitation of 100 parts by mass of a hydrophobic organopolysiloxane (paragraph 15). Schneider et al. teaches 0.1 to 100 parts, preferably 1 to 15 parts, of at least one amorphous, hydrophilic, precipitated or fumed silica having a BET surface area of 20-1000 m2/g which meets the limitation of 1 to 15 parts by mass of a fine powder silica (paragraph 24). Schneider et al. teaches hydrophilic silicas may be fumed or precipitated silicas and they preferably have a particle size of less than 10 µm and an agglomerate size of less than 100 µm which meets the limitation of wherein in a particle size distribution of the organopolysiloxane-silica crosslinked product that is measured by single particle optical sizing (SPOS method) after diluting the oil compound with toluene, a median particle size on volumetric basis is 5 to 25 µm (paragraph 51).
Regarding claim 2, Schneider et al. teaches preferably 1 to 50 parts of a silicone resin composed substantially of units of the general formula R3SiO1/2 and SiO4/2, in which R can be identical or different and denotes hydrogen or a monovalent, substituted or unsubstituted, saturated or unsaturated hydrocarbon radical having 1 to 30 carbon atoms per radical which meets the limitation of 0.1 to 15 parts by mass of an organopolysiloxane resin composed of RR2R3SiO1/2 units and SiO4/2 units where each of R1, R2 and R3 independently represents a substituted or unsubstituted monovalent hydrocarbon group having 1 to 18 carbon atoms (paragraphs 17-25). Schneider et al. teaches molar ratio of M to Q units is situated preferably in the range from 0.5 to 2.0 which meets the limitation of where a molar ratio of R'R2R3SiO1/2 units to SiO4/2 units is 0.4 to 2.0 (paragraph 52).
Regarding claim 3, Schneider et al. teaches preferably 1 to 50 parts of a silicone resin composed substantially of units of the general formula R3SiO1/2 and SiO4/2, in which R can be identical or different and denotes hydrogen or a monovalent, substituted or unsubstituted, saturated or unsaturated hydrocarbon radical having 1 to 30 carbon atoms per radical which meets the limitation of 1.0 to 10 parts by mass of an organopolysiloxane resin composed of RR2R3SiO1/2 units and SiO4/2 units where each of R1, R2 and R3 independently represents a substituted or unsubstituted monovalent hydrocarbon group having 1 to 18 carbon atoms (paragraphs 17-25). Schneider et al. teaches molar ratio of M to Q units is situated preferably in the range from 0.5 to 2.0 which meets the limitation of where a molar ratio of R'R2R3SiO1/2 units to SiO4/2 units is 0.6 to 1.0 (paragraph 52).
Regarding claims 4 and 5, Schneider et al. teaches obtainable for example through alkali-catalyzed condensation of silanol-terminated polydimethylsiloxanes with a viscosity of preferably 50 to 50 000 mPas at 25 ̊C which meets the limitation of wherein the silicone oil compound is an alkaline catalyst-treated product (paragraph 55).
Conclusion
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/GUINEVER S GREGORIO/Primary Examiner, Art Unit 1732 06/04/2026
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